Gracie v. Gracie

217 F.3d 1060, 55 U.S.P.Q. 2d (BNA) 1256, 2000 Cal. Daily Op. Serv. 5467, 2000 Daily Journal DAR 7323, 2000 U.S. App. LEXIS 15607, 2000 WL 890451
CourtCourt of Appeals for the Ninth Circuit
DecidedJuly 6, 2000
DocketNos. 98-15672, 98-16386
StatusPublished
Cited by110 cases

This text of 217 F.3d 1060 (Gracie v. Gracie) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Gracie v. Gracie, 217 F.3d 1060, 55 U.S.P.Q. 2d (BNA) 1256, 2000 Cal. Daily Op. Serv. 5467, 2000 Daily Journal DAR 7323, 2000 U.S. App. LEXIS 15607, 2000 WL 890451 (9th Cir. 2000).

Opinion

O’SCANNLAIN, Circuit Judge:

We must resolve a variety of issues in this complex trademark litigation arising out of the U.S. activities of two members of the large and prominent Gracie family of Brazil, known for popularizing, competing in, and teaching a form of the martial art jiu-jitsu.

I

Carley Gracie (“Carley”) and Rorion Gracie (“Rorion”)2 are first cousins. More than 38 members of this Brazilian family have been involved in jiu-jitsu competition or teaching. Both Carley and Rorion operate California-based jiu-jitsu instruction businesses.

Carley came to the United States from Brazil in the early 1970s. Carley began teaching jiu-jitsu in the eastern United States as early as 1974 and in California sometime after he arrived in the state in 1979. Carley has used the name “Gracie” in identifying his jiu-jitsu instruction business.

In the late 1970s, Rorion came to the United States and began teaching the “Gracie method” of jiu-jitsu in Southern California. He used the term “Gracie JiuJitsu” to identify his business, which now consists of a nationwide chain of training facilities. Rorion publicized his jiu-jitsu instruction business through national advertising which used the term “Gracie JiuJitsu” and the “Triangle Design” logo, which consists of two grappling jiu-jitsu figures outlined by an open triangle. In 1988, Rorion applied for and obtained a California registration for the Triangle Design logo. In 1989, Rorion applied for and obtained federal registrations for the “Gracie Jiu-Jitsu” service mark and the Triangle Design logo. Rorion has actively enforced his rights in “Gracie Jiu-Jitsu” and the Triangle Design logo through litigation.

In December 1994, Carley sued Rorion, challenging the validity of the term “Gracie Jiu-Jitsu” and the Triangle Design logo as service marks. Carley’s first amended complaint alleged the following federal and state causes of action: (1) cancellation of registration, (2) damages for false or fraudulent registration, (3) untrue or misleading advertising, (4) defamation, (5) interference with prospective business relationships, (6) infringement of common law service marks under California law, (7) unfair competition, (8) attempt to monopolize in violation of the Sherman Act, and (9) false advertising in violation of 15 U.S.C. § 1125(a). Rorion counterclaimed, alleging that Carley infringed registered marks for “Gracie Jiu-Jitsu” and the Triangle Design logo.

Pretrial proceedings and discovery in the case continued into 1997. In March 1997, Rorion filed a motion for summary judgment, which Carley opposed. The district court granted summary judgment in favor of Rorion with respect to Carley’s first, second, fourth, fifth, sixth, and eighth causes of action. The district court also granted summary judgment in favor of Rorion with respect to the third, seventh and ninth causes of action, “subject to the following exception: [Rorion’s] motion for summary judgment is denied with respect to [Carley’s] claim for false advertising under 15 U.S.C. § 1125(a)(1) and Cal. Bus. and Prof.Code § 17500, and [Carley’s] [1064]*1064claim for unfair competition, for [the making of specified statements].” The district •court also denied Rorion’s motion for summary adjudication of his counterclaims for infringement.

A jury trial on the remaining claims began in November 1997. On November 18, 1997, the district court granted Car-ley’s motion to dismiss all defendants other than Rorion himself. On November 19, 1997, the jury returned a verdict in which it found that (1) Rorion did hot have a valid federal service mark for “Grade JiuJitsu,” (2) Rorion did have a valid federal service mark for the registered Triangle Design logo, (3) Carley infringed the registered Triangle Design logo, (4) Carley’s infringement was “willful,” and (5) Carley profited from the infringement in the amount of $108,000.

On November 24,1997, the district court held a hearing regarding Carley’s equitable defenses to infringement of the Triangle Design logo and also heard motions by Rorion challenging the evidence of gener-icness presented at trial regarding the term “Grade Jiu-Jitsu.” The district court entered its findings of fact and conclusions of law regarding Carley’s equitable defenses to infringement on December 3, 1997, ruling in favor of Rorion. Carley subsequently moved to amend or correct the court’s findings.

Also on November 24, 1997, Carley filed a motion to modify the court’s summary judgment ruling and to order cancellation of the registration for which the jury found Rorion had no valid federal service mark. Carley’s motion was denied.

On January 8, 1998, the district court entered a judgment pursuant to the jury verdict and the court’s findings of fact and conclusions of law. The judgment provided only that “judgment shall be entered in favor of [Rorion] and against [Carley] in the amount of $108,000.” This original judgment, which the court subsequently amended, omitted mention of both the jury verdict in favor of Carley on the “Grade Jiu-Jitsu” infringement counterclaim and the jury’s finding of invalidity with respect to the “Grade Jiu-Jitsu” service mark. This judgment also did not grant Rorion any injunctive relief with respect to his registered Triangle Design service mark.

Both Carley and Rorion filed a variety of post-trial motions. Carley filed a Rule 59 motion for a new trial on the Triangle Design infringement counterclaim. Rorion filed a motion seeking $620,000 in attorneys’ fees. Both sides filed motions to amend the judgment: Carley asked the court to amend the judgment to reflect the jury’s verdicts with respect to “Grade JiuJitsu,” while Rorion asked the court to amend the judgment to include injunctive relief to protect the Triangle Design logo.

The district court ruled on the post-trial motions on March 13, 1998. The court denied Carley’s motion for a new trial. The court also made minor amendments to its findings of fact and conclusions of law. As requested by Rorion, the district court entered a permanent injunction prohibiting Carley from using any logo similar to Ro-rion’s Triangle Design logo. The district court also awarded Rorion $620,000 in attorneys’ fees. Finally, the district court entered an amended judgment, in which it (1) entered judgment in favor of Rorion on his claim of infringement of the Triangle Design logo; (2) entered judgment in favor of Carley on Rorion’s claim of infringement of the “Grade Jiu-Jitsu” name; (3) declared that Rorion “do[es] not have a valid service mark for the name GRACIE JIU-JITSU,” as requested by Carley’s motion to amend the judgment; (4) awarded Rorion $108,000 on his Triangle Design logo counterclaim, the amount of Carley’s profits as found by the jury; and (5) confirmed the grant of permanent injunctive relief to Rorion, as requested by Rorion’s motion to amend the judgment.

Both sides filed notices of appeal. Car-ley noticed his intent to appeal the portion of the amended judgment relating to the Triangle Design logo and various pretrial rulings (including the summary judgment [1065]*1065ruling on Ms cancellation claim). Rorion noticed his intent to appeal the portion of the amended judgment stating that he had no valid service mark in “Gracie Jiu-Jit-su.”

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217 F.3d 1060, 55 U.S.P.Q. 2d (BNA) 1256, 2000 Cal. Daily Op. Serv. 5467, 2000 Daily Journal DAR 7323, 2000 U.S. App. LEXIS 15607, 2000 WL 890451, Counsel Stack Legal Research, https://law.counselstack.com/opinion/gracie-v-gracie-ca9-2000.